Home » UPC decisions » Local Division » Paris Local Division » LD Paris, July 4, 2024, Decision on the merits in an action for infringement with counterclaim for revocation, UPC_CFI_230/2023

LD Paris, July 4, 2024, Decision on the merits in an action for infringement with counterclaim for revocation, UPC_CFI_230/2023

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Key takeaways

This principle allows the claimant in the main action to exclude certain acts of infringement in order to avoid the inconvenience of parallel jurisdictions between the UPC and national courts during the transitional period provided for in Art. 83 of the Agreement (“carve out”).

However, this principle cannot restrict a defendant in its challenge to the validity of the European patent which is being asserted against it since no legal text that is binding upon UPC law expressly states such a restriction.

Art. 71(a) states that the UPC is a “common court” which “shall be deemed to be a court of a Member State”. This means that the UPC is subject to the “Member State courts” regime in this matter. Art. 29 and 30 of the Brussels Ibis are therefore directly applicable to the UPC.

BP comments: this statement deviates from the recent decision from CD Paris (UPC_CFI-484/2023) stating, in essence, that Art. 71(a) is not applicable to the UPC, otherwise Art. 71(c) would be superfluous.

Only Art. 33(3) UPCA governing the internal jurisdiction of the UPC divisions provides that “(3) [a] counterclaim for revocation as referred to in
Article 32(1)(e) may be brought in the case of an action for infringement as referred to in Article 32(1)(a)”. The fact that the Plaintiff has chosen to exclude certain acts of infringement from its claims against some of the defendants does not limit those defendants’ right to challenge the validity of the patent in its entirety.

1) The patent claim is not only the starting point, but the decisive basis for determining the protective scope of the European patent.
2) The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.
3) However, this does not mean that the patent claim serves only as a guideline and that its subject-matter may extend to what, from a consideration of the description and drawings, the patent proprietor has contemplated.
4) The patent claim is to be interpreted from the point of view of a person skilled in the art.
5) In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.

These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent.

The patent-in-suit was previously challenged by an opposition before the EPO. With the decision in May 2023, the EPO rejected the opposition and the patent was maintained in its granted form. The EPO found that claim 1 involved an inventive step in view of D14 (= D1 in the present UPC proceedings, US 2015/0205947- “Berman”).

However, the LD Paris found that claim 1 is obvious in view of Berman, deviating from the EPO’s previous assessment.

Division

Paris (FR) Local Division

UPC number

UPC_CFI_230/2023

ACT_546446/2023

Type of proceedings

Infringement Action with counterclaim for revocation

Parties

DexCom, Inc.

vs.

Abbott Scandinavia Aktiebolag, Abbott NV / SA, Abbott S.r.l., Abbott Diabetes Care Inc., Abbott Diagnostics GmbH, Abbott France, Abbott B.V., Abbott Logistics B.V., Abbott GmbH, Abbott Laboratories

Patent(s)

EP3435866 (Proprietor: DexCom, Inc.)

Body of legislation / Rules

EPC: Art. 54, Art. 56, Art. 69, Art. 138(1)

UPCA: Art. 31, Art. 32(1), Art. 65(2), Art. 65(5), Art. 69, Art. 76(1), Art. 83

UPC RoP: Rule 30, Rule 118.5

Regulation (EU) No 1215/2012 Brussels I recast (Brussels Ibis): Art. 29 to 30, Art. 71c


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  • Maggie Huang

    German and European Patent Attorney, UPC Representative

  • Tilman Müller

    Attorney-at-Law (Rechtsanwalt), Certified IP lawyer, UPC Representative, Partner

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